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Thursday, March 22, 2012

“Inventive Step” under the Patents Act, 1970: Where Is the Confusion?

The definition of
novelty, non- obviousness and industrial applicability criteria, despite
conceptual similarities, may differ subtly from one jurisdiction to another. Consequently, it
is necessary to keep an open mind when approaching the definitions to avoid
unwarranted assumptions which have no basis in the statute.

The definition of
“inventive step” is prone to such assumptions because it is assumed that the
definition is universally the same. Inventive step under the Act in Section
2(ja) is defined as follows:

“inventive step” means a
feature of an invention that involves technical advance as compared to the
existing knowledge or having economic significance or both and that makes the
invention not obvious to a person skilled in the art

The
abridged and incorrect interpretation of the definition is that inventive step
is equated to “a non-obvious technical advance”. This, however, has no basis in
the wording of the definition or the legislative policy that is reflected in
the definition.

If
inventive step were to only mean a “non-obvious technical advance”, it renders
nugatory the use of “or having economic significance or both”. The
simpler way of understanding the definition is to expand it as follows:

1.
Inventive step means a feature of an invention
that involves technical advance as compared to the existing knowledge and that (reference
is to feature, not "technical advance") makes the invention not
obvious to a person skilled in the art

2.
Inventive step means a feature of an invention
having economic significance and that (reference
is to feature, not "technical advance") makes the invention not
obvious to a person skilled in the art

3.
Inventive step means a feature of an invention
having technical advance and economic significance and that (reference
is to feature, not "technical advance") makes the invention not
obvious to a person skilled in the art.

In
other words, inventive step refers to that feature of the invention which
satisfies the following twin criteria:

1.
The feature involve a technical advance or must have economic
significance or both; and

2.
The feature must be non-obvious to a person skilled in the art.

Therefore,
inventive step does not refer solely to a “non-obvious technical advance”, but
in fact refers to a “non-obvious feature” which involves either a technical
advance or has economic significance or both.

The
corollary is that the definition distinguishes “technical advance” from the
requirement of non-obviousness. “Technical advance” is a misnomer owing to the
presence of the word “advance”. Under the definition, a technical advance
by itself is not non-obvious, since if that were to be the case a “non-obvious
technical advance” would be redundant.

One
of the principles of statutory interpretation is that no word or term or phrase
used in a statutory provision must be rendered redundant/repetitive. Applying
this principle to the definition of inventive step, it bears out that a
technical advance simply refers to a feature which is technical in nature,
whose qualitative contribution is to be further assessed by the requirement of
“that
makes the invention not obvious to a person skilled in the art”.

The
other important corollary is that the presence of technical advance is not the
sole criterion to judge if an invention has an inventive step. Economic
significance of a feature which is non-obvious too by itself could help the
product or the process satisfy the “inventive step” requirement. Importantly,
the criterion of economic significance is equally applicable to products and
processes.

It
is important to understand that a clearer and surer approach to the law
applying time-tested principles of statutory interpretation is the best way to
contribute to the shaping of an informed jurisprudence and formulation of
policy initiatives. It is not possible to suggest what the law ought to be
unless we understand with clarity what the law is.

Thank you sir for this wonderful interpretation. However, most humbly, I am not ablee to agree with it because of the following two reasons:1. A 'feature' could be obvious but it could still be an advancement. Every new dimension which is added is an advancement- it might be obvious, it does not matter that it has not been done before.2. I could not imagine what would be a 'non obvious economically significant feature' because when a problem which has remained unsolved for quite a long time when solved by the most simple methods leads to an invention.I feel that the statute is wrongly worded for the same reasons mentioned by you. Ofcourse, I may be wrong.What is your opinion on this? Shall be grateful if you may clarify further.

Dear Tanveer,Thanks for the comment. To be honest, I too feel that the definition of "inventive step" in the Act could have been worded in simpler language. As regards your queries, I hope you don't mind me saying this, but portions of your first query are unclear, or at least I am unable to comprehend them fully. Let me think aloud, and please do feel free to correct me if you think I still haven't understood you correctly. According to you, (A) every new dimension/feature is an advancement and (B) even an obvious feature could be an advancement. If you are trying to say that every feature which was unknown in the prior art constitutes an "advancement", I dont see how your proposition is different from what I said because the term "technical advance", as I said in the post, appears to be a misnomer since all it refers to is a feature which is technical in nature and is new to the state of art. Whether such a feature, when it involves a technical advance, is truly an inventive step is decided by the second limb of the definition of inventive step i.e. non-obviousness.

As for your second query, the answer partly lies in your question. The law recognizes a situation where the feature may not be a technical advancement over the prior art, but may represent enormous economic value by way of cost savings. You could probably look up American and English case laws where "inventiveness" is bestowed on a feature owing to the savings it represents, although it may not appear to be a quantum cognitive leap.

Having said the above, I do not see an alternative interpretation to mine, put forth by you based on principles of statutory interpretation. Could I request you to support your second query based on canons of interpretation? Simply put, I'd like to see how would you discard the express presence of "economic significance" and its disjunctive use in the definition staying within the framework of rules of interpretation.

It could be pointed out here that the definition is using the words “feature . . . having economic significance” and not the expression “feature . . . having economic significance as compared to the existing knowledge”. But the question is how it could be said that there is an “economic significance” without making a comparison to some existing knowledge of the economic value of the invention known in the prior art. The very word “significance” requires some amount of comparison. The inventor may claim that his invention is having an economic significance, then, other may ask him “economic significance over what”, and the inventor may answer over the economic value of the invention know in the prior art. Thereafter, the next query would be whether such economic significance is obvious or non-obvious to a person skilled in the art of that invention. If it is obvious, the feature alleged to be having an economic significance would not amount to inventive step, otherwise it is. Secondly, how is it possible to visualize the economic significance of a feature of the invention without that feature having a technical advance as compared to the existing knowledge? Your comment in the light of your own reply to one Mr. Tanveer that “the law recognizes a situation where the feature may not be a technical advancement over the prior art, but may represent enormous economic value by way of cost saving.” Will you please cite one or two such a situation?